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Amendments to the Grace Period in Taiwan for Novelty and Inventive Step

On May 1, 2017, an amendment to the Taiwanese Patent Act became effective for all new patent applications filed on this date.In addition, in conjunction with the amendments to the Patent Act, the Enforcement Rules of the Patent Act were likewise amended.

Under the Taiwanese Patent Act, the requirements of novelty and inventive step for invention and utility model patent applications as well as design patent applications is governed by Articles 22 (applicable to invention and utility model applications) and 122 (applicable to design applications).

Prior to May 1st, a grace period in Taiwan was only available for very limited numbers and types of public disclosures.These public disclosures were those when the invention was:

a)Disclosed publicly for experimental purposes;

b)Published in a printed publication;

c)Displayed at an exhibition sponsored or recognized by the Government; or

d)Disclosed without the consent or against the consent of the applicant.

Additionally, applicants wishing to claim advantage of the grace period had to comply with a number of formal requirements, including:

a)Filing a patent application in Taiwan six months from the date of occurrence of any of the above described public disclosures;

b)Making a declaration at the time of filing describing the public disclosure as well as providing the year/month/date in which the disclosure occurred; and

c)Submitting an evidentiary document at the time of filing or within a time period specified by the Patent Office providing the existence of the disclosure.

The amendments that became effective on May 1st provide good news for most patent applicants.Specifically, first and foremost, the amendments extend the grace period for filing an invention or utility model patent application from six to twelve months from the date of occurrence of the public disclosure.Unfortunately, for design patent applications, the grace period remains unchanged, namely, six months from the date of public disclosure.Second, the amendments expanded the scope of the categories of public disclosure for which the grace period can be claimed.For example, speaking at a conference, publication of an invention in a product catalog, a poster presentation and disclosure in a public forum or on the internet can all be claimed under the grace period. However, there is one exception.Specifically, the grace period cannot be claimed when the public disclosure is the publication of an issued patent or application that is filed by the applicant or with the applicant’s consent.Said another way, the grace period is not available if the public disclosure is the publication of an issued patent or published application resulting from the “intent” of the application.However, the exception does not apply if an issued patent or application published contrary to the inventor’s intent, such as when a patent application is misappropriated or stolen by another person.If the public disclosure is due to a misunderstanding or negligence, the public disclosure is also deemed against applicant’s intention.For example, when an applicant understands the party receiving the disclosed information is under confidentiality obligations but later learns that that understanding is not correct.

This post was written by Lisa Mueller and Kate Shu-Yin Chu from Lee and Li.

Under Pakistani Patent Law, once novelty of a claimed invention has been established, the next step in assessing patent eligibility involves determining the inventive step or nonobviousness of the claimed invention. Because nonobviousness is a legal conclusion based upon certain underlying factual determinations assessed from the standpoint of a person skilled in the relevant art, nonobviousness determinations typically involve a difficult and complex analysis of the invention and the prior art. While determining whether or not a claimed invention has been “made available” to the public prior to the earliest priority date of the application is typically all that is needed to establish novelty or a lack thereof, a determination of obviousness or nonobviousness is not as straightforward.

Depending on the technology or type of invention claimed, Examiners in the Pakistani Patent Office (PPO) generally utilize a mix of the problem-solution approach employed by the European Patent Office (EPO) and the approach relied upon by the English courts as set out by the Court of Appeal in Windsurfing International v. Tabur Marine (Great Britain) [1985] RPC 59 (Windsurfing) when assessing nonobviousness. Specifically, the problem-solution approach involves:

1. Determining the “closest prior art;”
2. Establishing the “objective technical problem” to be solved; and
3. Considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

The inventive step approach set forth in Windsurfing involves:

1. Identifying the claimed inventive concept;
2. Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge of the art in question;
3. Identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention; and
4. Decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

To establish a prima facie case of obviousness, an Examiner must establish that there was some (1) teaching, motivation, or suggestion to combine the prior art to arrive at the claimed invention; and (2) that there was a reasonable expectation of success in doing so. For example, combining of two known compositions A and B to form a third composition C having the same purpose as compositions A and B would be sufficient to establish a prima facie case of obviousness. In contrast, if an Examiner is unable to provide a motivation for a skilled person to carry out a modification of the teachings of the prior art to arrive at the claimed invention or a reasonable expectation of success in doing so, then the Examiner has failed to establish a prima facie case of obviousness. Additionally, much like Examiners in other countries, Examiners in the PPO are not permitted to use hindsight or “ex post facto” analysis to combine the teachings of prior art to arrive at the claimed invention.

Tips for Responding to Obviousness Rejections

Focus not only on Differences but on the Invention “as a whole”

When responding to nonobviousness rejections, many Applicants focus solely on the differences between the claimed invention and the cited prior art. While such an assessment is part of a nonobviousness determination, Applicants should not forget that an obviousness inquiry also involves assessing the invention “as a whole”. For example, under the Pakistani Patent Law, when determining patent eligibility, it is improper to consider only the structure of a chemical compound while ignoring its properties. Furthermore, just because the differences between a claimed invention and the prior art may be small, minor or slight, does not necessarily mean that an invention will be considered to be obvious. Likewise, just because the differences between a claimed invention and the prior art are large does not necessarily mean that an invention will be transformed from being “obvious” to “nonobvious.”

There are a variety of different ways that an Applicant can establish that a claimed invention is nonobvious over the prior art. For example, an Applicant can argue that the Examiner has not established a prima facie case of obviousness because there is (1) no teaching, motivation, or suggestion to combine the prior art to arrive at the claimed invention; and (2) that there was a reasonable expectation of success in doing so.

Alternatively, an Applicant can provide evidence that the invention solves an unmet need or problem that existed in the art as of the earliest claimed priority date of the application. When making such an argument, an Applicant should provide evidence demonstrating the difficulties or challenges faced by those skilled in the art in trying to solve the unmet need or problem. If the unmet need or problem and the evidence demonstrating the difficulties or challenges faced by those skilled in the art trying to solve the need or problem was not in the application at the time of filing, then such evidence (such as publications, an affidavit, etc.) can be submitted during prosecution.

Additionally, an Applicant can provide evidence (such as publications, a post-filing affidavit, etc.) demonstrating the failure of others to make or practice the claimed invention. Still further, an Applicant can demonstrate that the claimed invention exhibits “superior” or “unexpected” results or properties when compared to the prior art. “Superior” or “unexpected” results generally must be established by providing comparative data over the closest prior art. Such evidence may be included in the application as originally filed or may be submitted in a post-filing affidavit during prosecution. However, for evidence of “superior” or “unexpected” results to be given any weight by the PPO, a relationship between the nature of the evidence and the features or characteristics of the claimed invention that make it nonobvious over the prior art must be established.

Post-Filing Affidavits
As mentioned previously, post-filing affidavits can be used to submit evidence to establish nonobviousness. There is no particular or preferred format for submitting a post-filing affidavit. After describing the skills and expertise of the Affiant, the affidavit may include as many details as necessary to establish nonobviousness. A copy of an affidavit submitted in another country can also be submitted. Notarization or legalization of the affidavit is not required.

This post was written by Naeema Sadaf (Miss) of PakPat World Intellectual Property Protection Services and Lisa Mueller.